THE CONCEPT OF TRADE DRESS PROTECTION--ITS SCOPE AND DEVELOPMENT

by Ranjit Kumar Gulla.*

ABSTRACT:

Though the main objective of the trademark law is to protect business goodwill and reputation, the ultimate benefactor is the public. Trademark as a badge of origin acts as identifiers of quality of the products thereby helps the public in removing the confusion in their minds as to the source of the products. There has been ever expansion in the scope of the marks, which are registered as Trademarks. Trade dress is an example of this expansion. The concept of trade dress has much importance in a country like India where the majority of the population is still illiterate. Trade dress helps the illiterate people who cannot read the trademark on the product as well as the manufacturers to reach the people easily.

I. INTRODUCTION:

Trademark laws are very different from other categories of intellectual property laws. They are not concerned with inventions or creations. Trademark laws in essence, protect the hard earned goodwill and reputation of a business, individual or commercial enterprise. Though the main objective of the trademark law is to protect business goodwill and reputation, the ultimate benefactor is the public. Trademark as a badge of origin acts as identifiers of quality of the products thereby helps the public in removing the confusion in their minds as to the source of the products.

Of the late, there have been many developments in the area of trademark laws. Earlier, only marks or symbols were used to be registered as trademarks and were protected under that mark. Now, due to the technological revolution in the communication, media and other areas and due to the increased knowledge and perception of individuals, business enterprises are showing more interest in registering non conventional marks such as colour marks, shape marks, smell marks, sound marks, advertisement slogans, trade dress etc. to capture the market.

In this paper, we shall discuss the scope and development of trade dress in the United States of America under the Lanham Act, 1946 with reference to Supreme Court’s observations in the two landmark cases.[1]We shall also see the beginnings of the trade dress protection in India in a recent case decided by Delhi High Court[2], under the Common Law of Passing Off.

II. trade marks:

Trademarks have existed for almost as long as trade itself. Once human economies progressed to the point where a merchant class specialized in making goods for others, the people who made and sold clothing or pottery began to mark their wares with a word or symbol to identify the maker. Such marks often no more than the name of the maker – have been discovered on goods from China, India, Persia, Egypt, Rome, Greece and elsewhere, and date back as much as 4000 years[3].

These early marks served several purposes. First, they were a form of advertising, allowing makers to get this name in front of potential customers. Second, they may have been used to prove that the goods were sold by a particular merchant, thus helping to resolve ownership disputes. Third, the marks served as a guarantee of quality, since a merchant who identifies himself with his goods puts his reputation on the line[4]. Trademark protection is awarded merely to those who were the first to use a distinctive mark in commerce.

Trademarks can be seen as serving two main purposes: first, to protect business reputation and goodwill and secondly, to protect consumers from deception, that is to prevent the buying public purchasing inferior goods or services in the mistaken belief that they originate from or are provided by another trader.[5] A mark may include any word, logo, device, branch, ticket, signature, name, shape, packaging, combination of colours or any combination thereof[6].

To a layperson, trademarks are often thought of as the public name of a producer or other business. The Lanham Act defines trademark as “the term trademark includes any word, name, symbol or device or any combination thereof

1. Used by a person, or

2. Which a person has a bonafide intention to use in commerce and applies to register on the principle register established by this Act,

to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown”[7].

As a direct result, a trademark serves to both identify and distinguish seller’s goods to prevent consumer confusion. The basic statutory definition of trademark appears simple and indicates the basic function of a trademark. The basic requirements may be summed up as:

1. Sign can be represented graphically and it should be distinctive,

2. Can serve the function of distinguishing the goods or services of one undertaking form those of other undertakings;

3. The mark must be used or intended to be used in the course of trade; and

4. The use must be of visual representation of the mark/sign.

The European Court of Justice in Canon Kabushiki Kaisha Vs. Metro Goldwyn Mayer Inc[8] has stated “the essential function of the trademark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him without any possibility of confusion, to distinguish the product or service from others that have another origin”.[9]

In USA marks may be classified in the increasing distinctiveness: generic, descriptive, suggestive, arbitrary or fanciful[10]. Marks that are deemed suggestive, arbitrary, and fanciful are entitled to trademark protection because their intrinsic natures to identify a particular source of a product. In comparison, generic marks are those that refer to the genus of which the particular product is a species, for example aspirin, thermos. These marks are not protectable as trade marks because the number of such appropriate terms is limited and all merchants should be equally allowed to use such terms to describe their own goods when competing for customers. Lastly, marks that serve only descriptive function in relation to a product may be protectable under trademark law as inherently distinctive. A distinctive term identifies a characteristic or quality of an article or service such as colour, odour, function, dimensions or ingredients. Overtime, a descriptive mark may acquire distinctiveness that allows it to be protected under the Lanham Act. This type of acquired distinctiveness is called secondary meaning. Secondary meaning is established when a manufacturer shows that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.[11]

When a trademark is immediately capable of identifying a unique product source, rights to the mark are determined solely by priority of use. Marks such as these are labeled inherently distinctive though for analytical completeness they are further subdivided into arbitrary, fanciful and suggestive marks. For all other trademarks – those deemed not inherently distinctive – the Lanham Act requires proof of an additional element to secure trademark rights i.e. secondary meaning[12].

III. TRADE DRESS:

We know that logos, symbols, and names of products and companies can be afforded protection under trademark law, but that is a very narrow view of what trademark law now protects. Although it has limits, trademark law, in US, through Lanham Act, will also protect slogans, phrases, packaging of products, and even the look of the product itself. Furthermore, case law has interpreted Lanham Act expansively. While determining what can qualify as a trademark, the Supreme Court has stated that the language of the Lanham Act described “Universe in the broadest of terms” in Qualitex Co. Vs. Jacobson Products Case[13].

Trade dress involves the total image of a product and may include features such as size, shape, colour or colour combinations, textures, graphics or even particular sales techniques.[14]

Trade dress can be registered under section 2 of the Lanham Act, 1946. However, even without registration, non-functional, distinctive trade dress is protected under section 43(a) of the Lanham Act (forbidding false designations of origin and false descriptions)[15]. This section is commonly referred to as providing federal common law protection for trademarks and related source identifiers.

Trade dress can be registered as a trademark with the United States Patent and Trademark Office (USPTO) if the trade dress is: 1) inherently distinctive or has acquired secondary meaning; and 2) is non-functional. While trade dress protection is not expressly set forth in the Lanham Act, it has evolved and been recognised through the development of case law.

The Lanham Act protects Trade dress by preventing a second-comer from offering a product or package that may cause consumer confusion with the first-comer’s product or package. To offer this broad protection, courts have continually expanded trade dress protection. Currently trade dress law protects almost any non-functional element that the ordinary purchaser sees including a product’s overall image, including its size, shape, colour, graphics, packaging, label, texture, colour combinations and specific sales methods. Although often noting these individual factors/ elements, courts will focus on the total combination of these elements in a product’s design when determining trade dress infringement.[16]

To prove trade dress infringement, a plaintiff must show 1) that the product is either inherently distinctive or has acquired a secondary meaning and 2) that there is a likelihood of confusion between plaintiff’s packaging and defendant’s packaging.[17]

Traditionally, trade dress referred only to the overall appearance of a product. Throughout the 1980s, the term was expanded to include the shape and design of the product itself. Products such as lightweight nylon bags[18], rubik’s cubes[19] and even teddy bears[20] were held to have a protectable trade dress.[21]

Since the courts concern is with protecting consumers from confusion as to source when granting trademark or trade dress protection, the consumer has to first connect the trademark or trade dress with a potential source of the product. This source significance of a mark is known as its distinctiveness. In other words, a mark must have become distinctive of the applicant’s goods in commerce in order to deserve trademark protection.[22]

Two Pesos Case:

In Two Pesos, Inc. Vs. Taco Cabana, Inc.,[23]Taco Cabana, a Mexican restaurant chain Sued Two Pesos, a rival Chain, claiming that Two Pesos deliberately copied Taco Cabana’s Decor. Taco Cabana argued that the restaurant's trade dress, a combination of non-functional features such as bright festive colours and distinctive roof design, created a distinctive total image for its restaurant chain. As a result of the distinctive image, Taco Cabana claimed it was entitled trademark protection under the Lanham Act. The trial court agreed and held that the trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the décor, the menu, the equipment used to serve the food, the servers uniforms and other features reflecting on the total image of the restaurant. The judge found that Two Pesos intentionally and deliberately infringed Taco Cabana’s trade dress and awarded Taco Cabana millions of dollars in damages.

The court, in a unanimous decision, held trade dress that is inherently distinctive is protectable under section 43(a) of the Lanham Act without a showing that it had acquired secondary meaning.

In its decision, the Supreme Court rejected the argument that competition would be hindered by the protection of trade dress design and shape. The Supreme Court went on to hold that requiring secondary meaning for a non-descriptive trade dress would hinder improving or maintaining the producer’s competitive position. The court concluded that any less protection given to trade dress would be contrary to congressional intent and would undermine the purposes of the Lanham act, 1946.[24]

In fact, according to the court, “trade dress as well as trade marks must be protected to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers…. Trademarks foster competition and the maintenance of quality by securing to the producer the benefits of good reputation”. The Supreme Court believed that through protecting the producer’s property rights in trade dress, the consumer is benefited by less confusion, assurance of predictable quality, and increased competition.[25]

Unfortunately, the Supreme Court in Two Pesos did not provide clear guidance as to which test to apply in trade dress cases in order to determine whether the trade dress is inherently distinctive. The court accepted the Jury’s findings from the district court that the elements of trade dress in this case were inherently distinctive and ruled only on whether secondary meaning was further required. After the two Pesos decision, the circuit courts struggled with the boundaries and definitions that needed to be clarified in order to have uniformity in this area of trade mark law.[26]

The Circuit Courts were divided on the question of the test to be adopted in finding the inherent distinctiveness of the trade dress after the Two Pesos case. They developed some tests to be adopted in finding the same.

In I.P. Lund Trading Aps Vs. Kohler Co.[27], the First Circuit court followed the test adopted by the Court of Customs and Patents Appeals (CCPA) in Seabrook Foods, Inc. Vs. Bar Well Foods Ltd.[28] The Seabrook Foods test was “whether the design and shape of a combination of elements is so unique, unusual or unexpected that one can assume without proof that it will automatically be perceived by customers as an indicator of origin – a trade mark”.[29]

In Knit waves, Inc. Vs. Lollytags Ltd.[30] case, the second circuit was found that the proper enquiry for determining inherent distinctiveness was to ask whether product features were likely to serve primarily as a designator of origin of the product. It observed that trade dress (product feature or appearance) must demonstrate that the primary purpose behind the design was to identify its product source.

In Duraco Products, Inc. Vs. Joy Plastic Enterprises[31] case, the Third Circuit court formed a new test in determining the inherent distinctiveness of trade dress. The court said that the product configuration must be 1) unusual and memorable; 2) conceptually separable from the product; and 3) likely to serve primarily as a designator of origin of the product.

The Fourth circuit in Ashley Furniture Industries, Inc. Vs. SanGiacomo N.A. Ltd.[32] Case, applied the Aber Crombie Classifications, and rejected the tests fashioned by the first, second and third circuits.[33]

Finally, the Eighth circuit visited Two Pesos analysis in Stuart Hall Co. Vs. Am pad Co.[34] case. This court sought to determine the proper test for determining inherent distinctiveness in trade dress. It said that Supreme Court in Two Pesos held that product configuration and product packaging should be treated uniformly and applied the Abercrombie analysis.

Wal-Mart Stores Case:

The issue of trade dress and inherent distinctiveness revisited by the Supreme Court in Wal-Mart, Inc. Vs. Samara Bros., Inc.[35]. In this case, Samara Brothers, Inc. designs and manufacturers a line of children’s clothing. Samara Brothers primary line of clothing is a line of spring/ summer one piece seersucker outfits decorated with appliqués of hearts, flowers, fruits and the like. Wal-Mart is a national retailer that sells, among other things, children’s clothing.

In 1995, Wal-Mart contracted with a supplier to manufacture a line of children’s outfits based on the Samara Brothers Line of seersuckers for sale in the 1996 spring/ summer season. Wal-Mart provided the manufacturer with photographs from the Samara Brothers line and the supplier dutifully copied sixteen garments, with only minor modifications. Wal-Mart subsequently sold the Knock-off Seersuckers in 1996 for a gross profit of $ 1.15 million.

Samara Brothers learned of Wal-Mart’s actions in June 1996 and filed suit in the US District court for the southern district of New York, alleging that Wal-Mart’s sale of the knock offs infringed the unregistered trade dress in its seersucker line of clothing.

The court in this case, overwhelmingly made more sense to limit Two Pesos and reign in the expanding scope of protection afforded to unregistered trade dress under section 43(a) of the Lanham Act than it did to maintain the status quo and allow the scope of section 43(a)’s protection to expand further. Justice Scalia, writing for a unanimous Court, stated, “a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning”.[36]

Justice Scalia began the opinion by remarking that a products trade dress is properly considered a symbol or device subject to protection under Lanham Act Secton 43(a), notwithstanding the lack of textual protection for trade dress and that the protection afforded to trade dress under sec. 43(a) has recently expanded to included not only a products packaging but also the design the product itself. Justice Scalia went on to point out that although section 43(a) includes no textual distinctiveness requirement, the courts have universally applied a distinctiveness requirement to trade dress cases because:

a) without distinctiveness, a particular trade dress would not cause confusion as to the origin, sponsorship, or approval of the subject goods as required by section 43(a), and

b) the requirement for registering a mark (or trade dress) under section 2 of the Lanham Act are generally applicable in determining whether a mark (or trade dress) is protected under section 43(a).

Justice Scalia also explained that the distinctiveness requirement could be satisfied in one of two ways. First, a mark (or a product's trade dress) is inherently distinctive if its intrinsic nature serves to identify a particular source. Second, a mark or a product's trade dress can acquire distinctiveness even if it is not inherently distinctive, if it has developed secondary meaning. A mark or trade dress develops secondary meaning when in the minds of the public the primary significance of a mark is to identify the source of the product rather than the product itself.

Justice Scalia specifically noted that the foundation for differentiating between marks that are inherently distinctive and marks that have developed secondary meaning is found in section 2 of the Lanham Act. Furthermore, section 2 of the act specifically states that nothing there in will prevent the registration of a mark used by the applicant, who has become distinctive of the applicant's goods in commerce, however nothing in the act demands the confusion that every category of mark necessarily includes… some marks that are inherently distinctive. Moreover, with respect to least one category of mark – colours held that no mark could ever be inherently distinctive.

Having laid the groundwork to follow the reasoning of the Qualitex rather than Two Pesos, the Wal-Mart decision effectively sounded the death knell for the doctrine of inherent distinctiveness in product configuration by echoing that design like colour is not inherently distinctive. The court proceeded by clarifying that word marks and product packaging commonly derive their inherent distinctiveness, “from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product. Consumers are predisposed to regard such symbols as indication of the producer, which is why such symbols almost automatically tell a customer that they refer to a brand”.[37]

In distinct contrast, however, product designs, like colour, differ because “consumer predisposition to equate the design feature with the source does not exist”. [38] On the contrary, “Consumers are aware of the reality that, almost invariably, even the most unusual of product designs such as a cocktail shaker shaped like a penguin – is intended not to identify the source, but to render the product more useful or more appealing”.[39] Wal-Mart is an apparent attempt by the court to judicially recognise this reality.

The Wal-Mart Court reasoned that requiring a pre-requisite showing of secondary meaning for unregistered product designs would ultimately serve to protect new market entrants from anti-competitive strike suits, by removing an environment that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.[40]

Ultimately, the court reasoned that any apparent harshness of their view, bright line rule was intimated by a producers ability to seek a design patent or copyright protection for the design of his products. It also reiterated that its decision in Wal-Mart was not in direct conflict with Two Pesos and that Two Pesos had absolutely no bearing on the Wal-Mart case because the design of the restaurant in Two Pesos was more akin to product packaging or some ‘tertium quid’ than it was to product design.[41]

The motivation behind the Supreme Court's approach was confirmed when, in closing, it provided the following advice to courts confronted with distinguishing between product design and product packaging trade dress: “to the extent that there are close cases… courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”

The Supreme Court’s holding in Wal-Mart will serve to make it more difficult to make a showing of distinctiveness in product configuration trade dress cases. Since secondary meaning is not an essential element to these cases, businesses that want to protect their product designs in this area will have to prove that consumers associate the challenged trade dress with a source. This can be done through testimony and survey evidence or through the Lanham Act itself, which provides for a rebuttable presumption of secondary meaning after five years of continuous use.[42] By imposing this additional burden on product configuration trade dress cases, newer products and product lines will have a heavy burden of proof to get trade dress protection. The Supreme Court itself acknowledges that secondary meaning must be proved by necessarily imperfect (and often prohibitively difficult) methods. Justice Scalia, in Wal-Mart dismisses the additional burden on producers that might possibly have an inherently source identifying product design by suggesting that they “secure a design patent or a copyright for the design”.[43]

Product Design Trade Dress Vs. Product Package Trade Dress: At the heart of trade mark law is the desire not to confuse the consumer: not to confuse the consumer as to the source of the goods and not to confuse the consumer as to the quality of the goods. The Supreme Court’s decisions in Two Pesos and Wal-Mart would seem to indicate that consumers would be easily confused by two restaurants that are decorated in a similar manner but who have their trademark names (which are not confusingly similar) emblazoned on their respective buildings in three-foot high letters than by two lines of children’s clothing that were meant to mimic each other and that are distinguishable only by a small, cloth label sewn into the inside seam. Besides the obvious physical differences between the two situations, today’s consumers also face potential confusion distinguishing between house and national brands, which flood the market place.[44]

By drawing artificial distinctions between product packaging and product configuration, courts separated trade dress law in to two categories. Under the rubric of trade dress product packaging is the actual package in which a product is marketed. Examples of product packaging include the can for PAM Cooking spray, OUZO Liquerer bottler[45] etc.

Trade dress protection also extends to the very design of the product itself, such as its configuration or shape. Product configuration, as distinguished from product packaging, involves the products own three – dimensional shape for example the shape and appearance of FERRARI automobiles.[46]

The lines of demarcation, however, are not always clear. Some trade dress will not fit easily into either category. Product configuration cases have developed the most controversial area of trade dress law.[47]

Functionality – A Bar to Trade dress Protection: In Inwood Laboratories, Inc. Vs. Ives Laboratories case[48] the court articulated what became the standard test for functionality in trade dress cases: that a product feature is functional if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article.

The sixth circuit in Trafix’s[49] case said that due to several possible alternative designs available to competitors, the dual spring design of MDI was not necessarily functional. The Supreme Court reversed and held that the Court of Appeals erred on functionality in two ways. First, the court held that “a utility patent is strong evidence that the features there in claimed are functional. Second, the court considered functionality without the inference of strong evidence from the patent. The court restated the Inwood[50] case language and held that the necessary test for functionality was not whether the particular product configuration was a competitive necessity. Instead, the court said that if the design meets the Inwood test, then there is not need to go further, since that test alone demonstrates functionality. It said that once a design is determined to be functional, the courts should go no further, and there is no possibility of Lanham Act protection.

IV. INDIAN POSITION ON TRADE DRESS:

The trademark law in India has undergone drastic reform resulting in the repeal of the Trade and Merchandise Act, 1958, by the Trade Marks Act, 1999. This Act of 1999 came into force from September 2003. The new Indian Trade Marks Act, 1999 makes the Indian law at par with international standards. The new Act recognizes service marks. It has done away with system of maintaining registration of trademarks in part A and part B with different legal rights, and to provide only single register with simplified procedure for registration and with equal rights.

The concept of well-known trademarks is introduced. To streamline and simplify the procedure of registration, it is now made possible to file one single application for registration of mark in different classes of goods and services. The initial term of protection is also enhanced from the previous 7 years to 10 years. The new Trademark law has also broadened the definition of trademarks to include shape of goods and combination of colour and it provides for registration of collective marks owned by associations etc.

The Trade Marks Act, 1999 is a copy of the UK’s Trade Marks Act 1994 as we follow the English Trade Mark laws from the beginning. Unlike the United States Lanham Act, 1946 the English Trade Marks Act, 1994 and the Indian Act, 1999 do not have provisions like section 43(a) (of Lanham Act) to protect un-registered trade dress or allow registration of trade dress which qualifies the tests of distinctiveness and source identifier.

Trade dress can be protected as getup under the law of passing off in UK and in India. Passing off is a common law remedy for protecting unregistered Trade Marks. Effectively it seeks to protect the rights of an individual or business, by protecting the goodwill of that business from unfair trading by other parties. It prevents other parties from carrying on business or selling their products under a name, mark or description, which could mislead the public by confusing them to believe that the business/ goods in question are those of plaintiff. Basically, passing off is connected with protecting unregistered Trademarks. Getup, packaging, business strategy, marketing techniques, advertisement themes etc. can also be protected under passing off.

Lord Oliver developed a list of three elements for determining passing off in Reckitt & Colman Products Ltd Vs. Borden Inc., Case[51] namely:

1. the existence of the claimant’s goodwill.

2. a misrepresentation as to the goods or services offered by the defendant

3.damage or likely damage to the claimant's goodwill as a result of the defendant's misrepresentation.

So, passing off essentially protects the goodwill of an individual or his business. Past case laws have established that goodwill can exist in anything like mark, symbol, device, shape, package, get-up, colour or colour combination of the goods or any combination thereof. Therefore, Trade Dress can be effectively protected as get-up under the law of passing off.

The Indian gospel on trade dress had for a while been the decision in Kellog co. Vs. Pravin Kumar Badabhai[52] where the Delhi High Court, despite enumerating the similarities in the trade dress of the plaintiff’s and defendant’s products, denied an injunction to the former while observing that the test was to see the products as a whole and in doing so the similarity in certain colour combinations was outweighed by the differences in the word marks of the plaintiff and the defendants.[53]

The recent years have seen an interesting shift in judicial perception. While tests for passing off have been interpreted with immense judicial creativity in relation to essential products such as drugs and pharmaceuticals, passing off actions in relation to consumer goods have continued to be governed by the relative similarities or dissimilarities of the accompanying word marks. In Cadila HealthCare Vs. Cadila Pharmaceuticals[54] the Supreme Court of India has held that:

“Pharmaceutical products will be purchased by both villagers and townsfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchase of goods in England. While we agree that in trademark matters, it is necessary to go into the question of comparable strength. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English Law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiff’s goods seems to over look the ground realities in India.”[55]

At the same time, the Delhi High Court in Untied Distillers Plc. Vs. Jagdish Joshi,[56] a suit for passing off, evaluated the relative similarities in the trade dress of the defendant and the plaintiff and held that a bare perusal of the trade dress of the defendant denoted a striking similarity between the defendant’s and the plaintiff’s products and the defendant's had not given any satisfactory explanation as to why there were such similarities with the plaintiff’s trade dress in their product’s trade dress.

In this backdrop, the decision of the Delhi High Court in Colgate Palmolive Co. Vs. Anchor Health and Beauty Care Pvt. Ltd [57] comes like a breath of fresh air, clearly charting new territory for Indian trademark law. In this suit for passing off, the plaintiff sought an interim injunction against the defendant’s use of the trade dress and colour combination of red and white in relation to identical products i.e. tooth powder, when the marks being used by the two parties were completely distinct, being ‘Colgate’ and ‘Anchor’. In the judgment the court held:

“It is the overall impression that a consumer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. if an illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, get up or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a cause of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter. Colour combination, get-up, layout and size of container are sort of trade dress, which involves overall image of the product's features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period of time”.[58]

In a detailed ruling taking into account the acquired reputation of Colgate’s red and white colour combination in its trade dress, the court held that as the trademarks ‘Colgate’ and ‘Anchor’ were written in English language they could not be distinguished by ordinary customer of a country where bare literacy level is abysmally low and said that if a product having distinctive colour combination, style, shape and texture had been in the market for decades as in this case (it was in the market since 1951) it lead to ineluctable inference of having acquired secondary meaning on account of its reputation and goodwill earned at huge cost. It said that the criteria was the overall impression from the look of packaging or container containing the goods and articles that could legitimately injunct its rival which was an element of unfair competition on part of the infringing party.[59]

If we analyse this present case, proof of acquired distinctiveness through secondary meaning (as required in the product design/ configuration trade dress cases in US) is necessary to prove good will and reputation through long use and existence in the market by the plaintiff. The law relating to trade dress is still in its infancy, stage in India. This is the only case (Colgate Vs. Anchor) so far to be decided by Indian Courts.

It is interesting to note that the new Trade Marks Law 1999 has been expanded to include shape marks and colour combinations as marks. Under this, a product package (including its colour combination, size, shape etc.) or a product design/ configuration (as shape mark) may be registrable as a mark. Nevertheless, passing off may provide a good alternative for protecting unregistered trade dress and the initiative has already started with the Colgate Palmolive case.

V. CONCLUSION:

The basic requirement for a mark to be registered as a trade mark are that it should be distinctive, capable of graphical representation, capable of distinguishing the goods or services as originating from a particular source from that of other similar goods and that mark should not be functional in nature.

A mark may include any word, logo, device, branch, ticket, signature, name, shape, packaging, and combination of colours or any combination thereof. Traditionally word marks, symbols or logos were registered as trademarks. Of the late, due to the technological revolution in communication and mass media and due to the increased levels of perception of an average consumer on brands, many business entities are rushing to register nontraditional marks, such as colour, smell, sounds, slogans, shapes etc as trade marks. Trademark offices, examiners and courts are also neither discouraging nor encouraging these types of marks to be registered. If they are capable of distinguishing the goods or services and distinctive, they are being allowed to be registered as trade marks.

One such type of development is trade dress protection. Trade dress involves the total image or impression of a product and may include features such as size, shape, colour or colour combinations, textures, graphics or even particular sales techniques. Trade dress can be registered under section 2 of the US Lanham Act as a trademark if it is inherently distinctive or has acquired secondary meaning; and is non-functional. However, even without registration non-functional and distinctive trade dress is protected under Sec.43 (a) of the Lanham Act. While trade dress protection is not expressly set for the in the Lanham Act, it has evolved and been recognised through the development of case law.

The Lanham Act protects trade dress by preventing a second comer from offering a product or package that may cause consumer confusion with the first comer’s product or package.

The Two Pesos case was the first case on the protection of trade dress to be decided by the Supreme Court of the US. It granted a some what broad protection to the trade dress of a Mexican restaurant by noting that such trade dress was inherently distinctive and do not require the proof of secondary meaning.

This case though said product packaging trade dress can be inherently distinctive and do not require the proof of secondary meaning, it did not set out a clear test as to what constitutes inherently distinctive trade dress.

After this case there was a split among the circuit courts in granting trade dress protection. The split was mainly due to the question that which test was to be adopted to establish inherent distinctiveness. The formidable test being the one developed by the CCPA in Seabrook Foods Case which asked 1) whether a trade dress is a common, basic shape or design, 2) whether it is unique or unusual in its particular field, 3) whether it is a mere refinement of commonly adopted and well known forms of ornamentation for that class of goods or services; and 4) whether the trade dress is capable of creating a commercial impression distinct from any accompanying words.

However, the split in circuit courts increased further with the Supreme Court’s decision in Wal-Mart case. Ironically, this case instead of clarifying the test to be adopted in finding out inherent distinctiveness, divided the trade dress into two categories as product packaging trade dress and product design trade dress. Furthermore, it reasoned that product packaging trade dress can be inherently distinctive and may not need to prove secondary meaning whereas, product design trade dress cannot be inherently distinctive and need to establish secondary meaning. This case has major implications on trade dress protection because some products cannot be divided into product package or product design/ configuration trade dress. Though they may be inherently indistinctive, due to the difficulty in classifying them as either product package or design, will require a secondary meaning to be established, which is an additional burden on the claimant.

In US, the trade dress law is not settled still. The circuit courts are divided on the issue of inherent distinctiveness and the trade dress classification into product package and product configuration trade dress. The two areas of law, (Trademark & Trade Dress) however, remain distinct in some respects. For instance, trade dress protection is generally focused more broadly than trademark protection. Where as trademark infringement cases often involve disputes over minor details, trade dress focuses on the total image or overall impression of a product.

Under Common Law, trade dress may be protected under passing off which protects the commercial reputation and business goodwill. Past cases established that trade dress can be protected as get-up under passing off. As far as India is concerned, it is interesting to note that the new Trademarks Act, 1999 has expanded the scope of trademark with the inclusion of shape of the goods and colour combination in the list of marks, which can be registered as trademarks. So, under this expansion, a product package or product design, which includes shape, colour combination, may be registered as trademarks. There are no such registrations filed as of now.

Another interesting development regarding India is that in a recent case, the Delhi High Court granted trade dress protection for colour combination (of Red & White) and shape of containers (for tooth powder) under the law of passing off. It noted that due to the high illiteracy levels in India trade dress of a product has great impact on the consumers and cause confusion in their minds.

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* LL.M in IPR, Research Associate, Amicus Law Firm, (ICFAI LAW), Plot no. 1, Vishnu Nursing Home Building, Nagarjuna Hills, Punjagutta, Hyderabad.

[1] Two Pesos vs. Taco Cabana Inc., 505 U.S. 763(1992); Wal-Mart Stores Inc. vs. Samara Bros. Inc., 120 S.Ct.1339(2000).

[2] Colgate Palmolive Co. vs. Anchor Health & Beauty Care Pvt. Ltd., IA No. 3502/2003 in suit No. 691 of 2003, decided by Delhi High Court on 29 Oct., 2003 (Unreported). Source-MANU/DE/1000/2003.

[3] Robert P. Merges, Peter S. Merell, Mark A. Lemley, “Intellectual Property in the New Technological Age”, 2003, Aspen Publishers, New York, p.529.

[5] David Bainbridge, “Intellectual property”, 5^th (ed), 2002, Pearson Education, New Delhi, pp. 532-533.

[6] Section 2 of the Indian Trademarks Act, 1999.

[10] As adopted by the Second Circuit Court in Aber Crombie & Fitch Co. vs. Hunting World Inc., 537 F. 2d 4 (2^nd Cir. 1976) [called Abercrombie test].

[11] Jill Sundberg, “Is the Expansion of Trade Dress Law Far Enough?” 20 St. Louis U. Pub. L. Rev. 417 (2001). The concept of secondary meaning recognizes that words with an ordinary and primary meaning of their own may after long use with a particular product come to be known by the public as designating that product. In order to establish a secondary meaning for a term, plaintiff must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.

[14] John H. Harland Co. Vs. Clarke Checks, Inc., 711 F.2d 966 (11^th cir. 1983).

[15] Section 43(a) of the Lanham Act, 1946 is commonly referred to as providing Federal Common Law Protection for trademarks and related source identifiers. It says that false designations of origin and false descriptions are forbidden. This section reads as:

1. Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.

[16] Charles Gielen, “Case Comment, EC: Trademarks-Shape mark- Whether Registrable as Trademark”, E.I.P.R. [2003] 25(2), N28-29.

[17] Sara Lee Corp. Vs. Kayser – Roth Corp. No.6: 92CV00460, 1992 US Dist. LEXIS 22598. The court listed separate likelihood of confusion standards for trade dress cases in Sara Lee Case. The factors included:

1.The strength or distinctiveness of the trade dress.

2.The similarity between the trade dresses of the packages.

3.The similarity of goods and services, which the trades dress, identifies.

4.The proximity of the two products in sales presentation.

5.The similarity of retail facilities and trade channels used to market the two products.

6.The similarity in advertising used by the sellers of each product.

7.The likelihood that the new comer will be able to bridge the gap between the two products.

8.The sophistication or lack thereof of the consumers.

9.The quality or special features of the defendant’s product.

10.The defendant’s intent.

11.And actual confusion.

[19] Ideal toy Corp. Vs. Plawner Toy Mfg., 685 F.2d 78

[21] Christina Platt Hill son, “Trade Dress Protection: When a Dress is a just a Dress According to the Supreme Court in Wal-Mart Stores, Inc. Vs. Samara Bros”, 53 Baylor L. Rev. 461.

[45] Paddington Vs. Attiki Importers & Distributors, Inc. 996 F.2d 577, 27 USPQ (BNA) 1189 (2^nd Cir. 1993)

[46] Ferrari SPA…. Vs. Roberts, 944 f.2d 1235 (6^th Cir. 1991)

[47] Andrea B. Pearson, “Defining Inherently distinctive Trade dress in the wake of Two Pesos,” 7 U Balt. Intell. Prop. J.1 (1998)

[49] TraFix Devices Inc., vs. Marketing Displays Inc., 532 U.S.23 (2001).

[53] SwetaSree Majumder, “Painting The Town Red (And White): Indian Law Recognizes Trade Marks Rights in a Colour Combination”, E.I.P.R. 2004, 26(8), 365-368.

[57] IA NO.3502/2003, in Suit No.691, of 2003, decided by Delhi High Court on Oct. 29, 2003 (Unreported). Source-MANU/DE/1000/2003.